Kappos Lays Out Ambitious Agenda for USPTO in Speech at IPO

By Gene Quinn
September 22, 2009

David Kappos, Director of the USPTO

David Kappos, USPTO Director

Last week David Kappos addressed the IPO annual meeting in Chicago, Illinois.  Kappos’ remarks were varied and really set a new tone for the future of the USPTO under his watch.  Kappos continued the theme he has already established in differentiating how the USPTO will run under his regime, as compared to how it ran under the previous regime.  Specifically, Kappos promises to cut pendency across the board, to develop a count system for patent examiners that does not require an endless stream of RCEs and he wants a patent system that does not favor (or disfavor) any particular technology over others.  On the negative side, Kappos was the bearer of bad news with respect to the fiscal crisis facing the Patent Office, and saying that there will be no new hires during 2010 and likely no way to dig into the backlog of pending cases.  He also announced his support for patent reform, which will get many shaking in their boots.  It is hard to argue with what he says, namely that it has been long enough without any overhaul of the patent system.  I think everyone will likely agree with that statement, but the devil will be in the details.  In any event, the agenda set out by Kappos is ambitious.  Now we have to see where it leads and whether it will result in a truly better patent system.

There were a number of comments from the Kappos speech that caught my attention, so perhaps the best way to handle them is to go step by step, pulling out quotes and offering some commentary.

1. “We’re going to have a count system that helps everyone get to the point without requiring two or three RCEs.”

COMMENTARY: This is certainly a welcome statement, and it is great to have a leader at the PTO who realizes what many examiners are doing.  Patent examiners simply do not have enough time to work on patent applications, and one way to process workflow is to do what you can in the limited amount of time given and then force RCE after RCE.  Cutting down on useless RCEs would definitely create significant improvements, should pay dividends with respect to cutting down the time an applicant has to wait to get an issued patent and should create a better working relationship between the patent bar and patent examiners.  There is nothing more frustrating than being forced into an RCE when  you know that it is as a result of an examiner not being given enough time and the examiner having to figure out ways to meet their quota goals.  Sadly, however, Kappos says he wants to prevent “two or three RCEs,” which could well mean that what we will see is an RCE in every case.  I would much rather a system be set up that would see an RCE as unusual and not the norm.  Perhaps I am reading to much into this quote, but this is something to keep an eye on.

2. “We are working on new programs to help cut pendency across the board, such as one that would allow an applicant to select an application to advance in the queue in exchange for each application they withdraw before substantive examination.”

COMMENTARY: This is certainly an outside the box way to approach things, and perhaps that is all the USPTO can do given budget limitations.  I will reserve judgment until I see and/or hear the details.  I can, however, envision abuses.  If you can select an application to drop and an application to advance to the point in line where the dropped application was, wouldn’t this create more patent applications and a greater backlog?  It would seem to me that inventive corporations would do well to file numerous applications, many of which might be on specious inventions just to have an application acting as a placeholder for a “real” invention that may come later and which you might want to advance out of turn.  Such a system could significantly benefit large, well-funded companies at the detriment of independent inventors and small businesses who do not have the resources to file placeholder applications.  Again, this is something to keep an eye on as additional details are available.

3. “I won’t stand up here charts and tell you how perfect our quality is. I know that quality is not where it should be, even if the agency’s past quality standards indicated otherwise.”

COMMENTARY: Amen!  Finally, someone in a position of power who understands that the “quality” metrics set up by the previous regime were ridiculous.  The old metrics had nothing to do with quality.  Quality is low and the fact that the Office was able to maintain such low quality while meeting and exceeding their goals every year shows that the metrics used to gauge quality were meaningless.  Such Soviet-era metrics (i.e., objective criteria that can be met without consequence for whether the criteria is meaningful) need to be a thing of the past, and I think they will be disposed of under Kappos.

4. “We’re going to take a run at developing a nationwide work force, which will allow us to hire the best candidates across the country, retain valuable employees, and control real estate costs associated with workforce expansion.”

COMMENTARY: I have been writing for years that Regional Patent Offices need to be placed on the table because there are only so many talented engineers and scientists who are both interested in and willing to move to Northern Virginia to work for the Patent Office as Patent Examiners.  Perhaps Regional Patent Offices is not what Kappos is referring to, but the fact that he recognizes that a national work force is necessary is a good sign indeed.  As only a government body can do, the minute the Alexandria Campus opened it was already under sized and over capacity.  How  you could build a brand new campus that isn’t big enough demonstrates a special kind of ineptitude reserved only for government, and that is what Kappos has inherited.  Whatever he does here will likely be a step in the right direction as long as he is mindful that work-from-home prevents junior examiners from the mentoring they require.

5. “In the policy arena,we are taking broad policy leadership positions aimed at increasing the role IP plays in accelerating innovation across ALL business models and industries. There is to be no prejudice for or against certain technologies. Our mission is U.S. policy leadership on a global scale to accelerate innovation, and products and services rooted in innovation.”

COMMENTARY: It is hard to know whether this relates to anything in particular, or is pie-in-the-sky language.  To the extent that the emphasis of “ALL,” which is capitalized in the original text, is meaningful I suspect it relates to how the Patent Office treated inventions in class 705 under the Dudas Administration.  Inventions in class 705 were treated to far more scrutiny than in any other area of invention, and there is little justification under the law to provide one particular category of invention different than others.  I am not suggesting that inventions are entitled to equal protection rights, but rather that inventors are entitled to be treated equally.  Discriminating against inventors and forcing those with inventions in class 705 to wait 7 to 10 years, which was the norm until In re Bilski, is unjustified and ridiculous.  The law says inventors are entitled to a patent “unless,” and that should mean something in application, not just in spirit.

6. “You can expect we will be strongly in favor of reform now. The patent system is a key driver of innovation and prosperity for our country. Innovation industries create jobs, which means a well-functioning patent system creates jobs. It has been too long since the U.S. patent system was overhauled.”

COMMENTARY: Yikes!  This could mean any number of things.  We all know that while patent reform appears to be dead presently, it will come back once again in some new form.  The new form of patent reform over the years typically looks like the old patent reform that couldn’t get through due to it being objectionable and opposed by an array of interests.  To the extent we have a meaningful rethinking and start from scratch I am all for it.  If we get the same, tired and antagonistic reform proposals next time around this would be particularly disheartening.

7. “[N]o hiring in 2010, so the size of the agency will decrease. It means no IT improvements, no overtime and probably no progress in cutting into the backlog.”

COMMENTARY: Well, Kappos’ speech wasn’t all good news.  How he will be able to deliver on any of his promises is doubtful, at least in 2010.  Perhaps the best we can hope for in 2010 is the laying of the foundation that will pay dividends beginning in fiscal year 2011.  The sad reality is that without hiring and through attrition the Patent Office will decrease in size during fiscal year 2010, and that means less work.  Lets hope it also doesn’t lead to broken promises and an even more turmoil for American innovators.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 8 Comments comments.

  1. breadcrumbs September 22, 2009 8:26 am

    Was point 7) directed not to the IPO audiance, but to those that need to open the wallet?

    Was it coincidence that the President echoes this with a Innovation Initiative Speach ringing with the promise of(paraphrasing) “we will give the funds to the Office at any amount they need” – yet the President only signs the budget and doesn’t actually control the giving?

  2. TT September 22, 2009 10:30 am

    I am still trying to figure how increasing the time allowed per case per Examiner is compatable with the goal of decreasing the backlog. Unless reforming the count system really means decreasing the time allowed per case?

  3. Noise above Law September 22, 2009 1:08 pm

    The goal of decreasing the backlog should take a far distant second to the goal of improved quality.

    Good Quality and Fast is best, but Good Quality and Slow is better than Bad Quality and Fast.

  4. Skovski September 22, 2009 2:21 pm

    Good Quality and Slow means ending the office (self-destruction).

    Bad Quality and Fast means you are still going on (reality).

    Good Quality and Fast is the best (ideal world)

  5. Gene Quinn September 22, 2009 2:41 pm

    Noise-

    I completely disagree with you. Quality is meaningless if patents are held hostage. Having the highest standards means start-up businesses cannot get funded and no new jobs get created. Slow patents are far more problematic than quality.

    -Gene

  6. Gene Quinn September 22, 2009 2:48 pm

    TT-

    Examiners have to play games sometimes to meet their quota goals and keep their job. This results in needless delay and expense. If examiners were given a chunk of time to really devote to the case it should speed things up because rather than happening in on again, off again, on again prosecution time could be spent more efficiently and lead to much quicker patents. I suspect there is also a hope that if examiners actually work the file appropriately applicants can get rights and also choose to cut and run. If you continually get rejected and you need some rights you have to keep fighting the good fight.

    If there is a revision in the count system and that results in less time per case that would be enormously bad because it would increase the games and further slow prosecution, resulting in fewer rights and more nonsense.

    -Gene

  7. Noise above Law September 23, 2009 5:54 am

    Slovski – this, as you point out, may be reality – this is also self-destruction, or do you think that the Office isn’t self-destructing? (I’d love to hear your rationale for your view).

    Bad Quality and Fast is easy:
    Rubber stamp or massive reject-reject -reject. I have proslytized against swinging from one extreme to the other.

    Gene – while not meant to minimize the criticality of the hostage situation, bad patents are simply worse than good patents at any speed. Bad patents create the common man’s perception that NO patents are better than bad patents. Bad patents have led to the knee-kerk and errant Office definition of quality which has spiralled us to our present situation. Bad patents have been the amunition of those that want to destroy the patent system. Go down the path of any target other than good patents and you will be lead to destruction. Patent quality is the first must.

    That being said, I do see the line of thought that opening the flood gates and allowing more good patents with some more bad patents through is better than the current choke hold of not letting ANY patents through, but that is not central to my position. My position pre-supposes that the Office is willing to actually grant patents to those applications that meet the requirements of the Law. I think we both agree that that is not currently happening.

    IF you are going to limit the process and sacrifice quality at the start, then it might be better to be fast about it. This is logical from the manifest statistics regarding patents and litigation (the bogeyman of excessive patent litigation is a contrivance – just ask Chief Judge Michel – oh wait you don’t ahve to – His view is onthe record). However, in the sacrificed quality scenario, the logical extreme would be to simply scrap the patent system and impliment a registration system. INSTANTLY eliminate the backlog, radically reduce costs (Buh-bye examiners and POPA) and let the courts fight it out with a much reduced overall load. The court’s load increases, but due to the low percentage of patents actually litigated, the overall system load will drop.

    But that is not what the Law is. That is not the system our founding fathers wanted to have. It is the wrong path.

  8. staff1 September 23, 2009 12:00 pm

    “It is hard to argue with what he says, namely that it has been long enough without any overhaul of the patent system…”

    The Mona Lisa hasn’t been overhauled in recent memory either. Should we scrap it? Not all change is for the good. There’s reform and there’s deform.

    Patent reform is a fraud on America…